Talk to an Intellectual Property Lawyer

Obtaining and maintaining a patent can be an expensive and
time-consuming process. Not only must you pay a variety of patent fees, but you
may also have to pay an attorney and a patent draftsperson (who will create
your patent drawings). By far, the most expensive aspect of the patent
application process is attorney fees.

Should You Pay an Attorney or Do It Yourself?

Should you attempt to do your patent application yourself or should you hire a professional to complete the application? Many inventors have obtained patents on their own ⎯ many using the method David Pressman explains in detail in his book, Patent It
Yourself. But doing your own patent
requires considerable diligence. If you have sufficient funds but don’t have
the time or writing skills to do it on your own, you may be better off hiring a
professional.

Of course, you can do some of the work yourself and hire a
professional to do the rest. You can, for example, draft your application, then
have an attorney review it, or hire an attorney only if your application runs
into problems with a USPTO examiner. Or you can familiarize yourself with the
patent drafting rules so that you can save time explaining your invention and
preparing your patent.

To determine whether you’re the type of person who can
successfully tackle your own utility patent application, consider these questions:

How are your finances? For some, the expense of hiring a
patent attorney (between $4,000 to $10,000) is the biggest hurdle to filing a
utility patent application. If your funds are limited (or if you just can’t
stand the idea of paying an attorney), consider doing it yourself.

How are you fixed for time? If you are pressed for time, you
might want to think twice before drafting your own patent. The process is time
consuming — hours of reading to learn how to do it and many more hours to draft
and monitor your application. Preparing and prosecuting your application can
easily use up 100-200 hours of your time.

Are you a writer? Besides the time, drafting a patent
application also requires writing skills, particularly because you must learn
the nuances and language of a unique legal process. If you didn’t like writing
book reports in high school, had trouble composing papers in college, or hate
writing memos at work, then you may not be cut out for the precise writing
required to prepare your own patent application.

Are you a project person? Are you the person that people
turn to when they need a project managed? Are you a can-do person around the
house, eager to take on and complete projects? Are you good at meeting
deadlines? (Be honest here.) If you’re good at completing projects, then
you’ve probably got the temperament to do your own patent application. But if
your to-do list still has items on it from last month, give some serious
thought to hiring a professional.

Have you ever been called a control freak? If you have an
overwhelming compulsion to tell people what to do and how to do it, then you
may want to control the drafting of your utility patent.

Should You Pay a Draftsperson or Create Your Own Drawings?

Nearly every utility or design patent application includes
drawings that help explain how to make and use the invention. You’re probably
familiar with these technical drawings that are almost always in black and
white and use a careful line-drawing style. A patent draftsperson usually
charges $75 to $150 per drawing for patent drawings and patents typically
include between three and ten drawings. You can also create your own drawings
using guides such as How to Make Patent Drawings.

Paying USPTO Fees

The third major cost when preparing and filing a patent
application are the fees that are paid to the U.S. Patent and Trademark Office
(USPTO). These fees are broken down for specific purposes and activities. You can pay these fees by personal check,
money order, or credit card. The fee depends on several variables, including the
number of independent and dependent claims, whether the applicant qualifies for
Small Entity Status, and whether an assignment is being filed (transferring
rights from the inventor to another entity). You can review current filing fees
at the USPTO website.

What is Small Entity Status?

An applicant qualifies for small entity status if it is a
for-profit company with 500 or fewer employees, a nonprofit organization, or an
independent. The USPTO charges small entities half the fees charged large
entities for filing a patent application and for issuing and maintaining the
patent. A small entity qualifies for these lower fees provided that the company
or inventor has not assigned or licensed, or agreed to assign or license, its
patent rights to a large entity (a for-profit company with over 500 employees).

Patent Application Fees

For utility patents, the small entity fees include a $165
filing fee ($82 if filing electronically), as well as a search fee of $270 and
an examination fee of $110. For large entities, the filing fees are a $330
filing fee, a search fee of $540, and an examination fee of $220. In addition,
both small and large entities must pay more fees for claims in excess of 20 and
for multiple dependent claims.

For design patents, the small entity fees include a $110
filing fee, as well as a search fee of $50 and an examination fee of $70. For
large entities, the filing fees are a $220 filing fee, a search fee of $100,
and an examination fee of $140. In addition, both small and large entities must
pay more fees for a design patent application that exceeds 100 pages.

For plant patents, the small entity fees include a $110
filing fee, as well as a search fee of $165 and an examination fee of $85. For
large entities, the filing fees are a $220 filing fee, a search fee of $330,
and an examination fee of $170.

Provisional Patent Application Fees

An inventor may file an interim patent application (called a provisional patent application or PPA). If the PPA sufficiently discloses the invention, and a regular patent application is filed within one year of the PPA’s filing date, the inventor gets the benefit of the PPA filing date for the purpose of deciding whether prior art is relevant and, in the event of a dispute, which inventor is entitled to the patent. In addition, the inventor gets the full 20-year term from the date the regular application is filed.

The PPA currently costs $110 to file ($220 for large entities), which means an inventor can now afford to get an invention registered with the U.S. Patent and Trademark Office (USPTO) and have a year to show the invention to potential developers before filing a regular patent application. An inventor who files a PPA may claim patent pending status. For an additional fee, companies such as Nolo enable you to automate the filing process with PPA filing programs.

Maintenance Fees

Fees must be paid to the U.S. Patent and Trademark Office
(USPTO) (or the patent office of another country where a patent has been
obtained) to keep an issued patent in effect. As of September 2008, the
maintenance fees for U.S. utility patents (there are no maintenance fees for
design or plant patents) are as follows:

due at 3.5 years, $980 for large entities and $490 for small
entities

due at 7.5 years, $2,480 for large entities and $1,240 for
small entities, and

due at 11.5 years, $4,110 for large entities and $2,055 for
small entities.

Effective with applications filed after June 7, 1995, the
patent term changed from 17 years from the date of issue to 20 years from the
date of filing. This means that the final maintenance fee may extend beyond the
17th year until the patent term actually expires. The USPTO will accept credit
card payments online for maintenance fees at its website (www.uspto.gov).